Taiwan’s IP Office finds no confusion between “KAIKAI” and “KOOKAI”

On June 18, 2021, KOOKAI ENTERPRISES UK LIMITED (“KOOKAI”) filed opposition against trademark “KAIKAI”, contending that the registration of “KAIKAI” would cause confusion with its famous “KOOKAI” brand (Reg. No. 00440618 and 00658854, see below).

The contested trademark, “KAIKAI” (Reg. No. 02127787, see below), was filed on September 21, 2020, and granted on March 16, 2021, designated for use in goods under class 25, including T-shirts, sweaters, coats, shoes, underwear, scarves, socks, gloves, etc.

 KOOKAI argues that registration of “KAIKAI” violates Article 30.1.10 and 30.1.11 of Trademark Act, which provides that a mark should not be registered if such a mark is “identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers” (Article 30.1.10); or is “identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark” (Article 30.1.11).

 

In its determination on August 15, 2022, TIPO sided with “KAIKAI”, finding “KAIKAI” not confusingly similar with the famous “KOOKAI” trademark:

 

1.      TIPO affirms that “KOOKAI” is a well-known trademark in the field of clothing after being continuously used and marketed for more than 38 years across multiple countries. It is undeniable that at the time “KAIKAI” was filed for trademark application, “KOOKAI” has achieved the status of well-known trademark in the field of clothing.

2.      As to similarity, TIPO finds the first three letters presented in “KOOKAI” and “KAIKAI” are different, which renders “KAIKAI” visually and verbally different from “KOOKAI”. In its entirety, TIPO holds the view that the similarity between “KOOKAI” and “KAIKAI” is low.

3.      As to similarity of use of products, TIPO notes that both “KOOKAI” and “KAIKAI” are applied for use in clothing and footwears, so they are used in related or associated products that serve similar function or purpose.

4.      TIPO further notes that both “KOOKAI” and “KAIKAI” have no specific meaning, so they are both distinctive when being designated for use in apparel and footwear products.

5.      For KOOKAI’s contention based on Article 30.1.11, TIPO opines that although “KOOKAI” is well-known, its low degree of similarity with “KAIKAI” and the fact that both “KOOKAI” and “KAIKAI” possess considerable distinctiveness make “KAIKAI” less likely to cause damages to distinctiveness or reputation of “KOOKAI”.

6.      For KOOKAI’s contention based on Article 30.1.10, TIPO again does not side with KOOKAI, finding the dissimilarity between “KAIKAI” and “KOOKAI” and the fact that both “KAIKAI” and “KOOKAI” are distinctive render “KAIKAI” distinguishable from “KOOKAI” among the ordinary consumers. Thus, there should be no confusion caused by registration of “KAIKAI”.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z044ZnRnbkNLZjNidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true

Red Bull prevails in trademark opposition proceeding over “Wild Ox” in Taiwan’s IP Office

On July 19, 2022, Taiwan’s IP Office (“TIPO”) determines that registration of “Wild Ox” should be cancelled in view of likelihood of confusion with Red Bull AG’s ("Red Bull") famous trademarks (Reg. No. 02018336, 01911042, and 01760536, See below).

The contested trademark, “Wild Ox” (Reg. No. 02117943, see below), was filed on August 18, 2020, and registered on February 1, 2021, designated for use in goods in class 5, including products like medicinal wine, refreshing agent, nutritional supplement, therapeutic drinks, medical tea, vitamin supplement, protein supplement, etc. Red Bull filed opposition against “Wild Ox” on April 21, 2021, alleging, among the others, violation of Article 30.1.10 of Trademark Act.

TIPO sides with Red Bull, finding that:

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is: 1) identical with or similar to another person’s registered trademark or earlier filed trademark, and 2) to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and 3) hence there exists a likelihood of confusion on relevant consumers.

2.    TIPO notes that in terms of similarity, both “Wild Ox” and Red Bull’s above cited trademarks feature two standoff bulls with rising tails, which render the trademarks, in their entirety, conceptually and visually similar with each other.

3.    As to the similarity of goods and services, TIPO finds Red Bull’s above cited trademarks are applied for use in products including various kinds of nutritional supplement and drinks, such as refreshing drinks, chicken essence, herbal tea, etc. TIPO thus opines products in which Red Bull’s trademarks are applied for use are associated with or related to products designated by “Wild Ox”. They serve similar functions, and meet similar needs from customers.

4.    With regard to distinctiveness of the trademark, based on the volume of use of trademark, TIPO posits Red Bull’s trademarks have gained strong familiarity and recognizability among the relevant consumers through its continuous and profound marketing, sponsorship, and sale of energy drink products. Plus, Red Bull’s brand has been used in diverse merchandise including toy figures, telescopes, watches, etc. Therefore, consumers are more familiar with Red Bull’s aforesaid trademarks.

Considering the similarity between “Wild Ox” and Red Bull’s trademarks, the fact that both trademarks are applied for use in associated goods with overlapping customer base, and that consumers are more familiar with Red Bull’s above trademarks, TIPO concludes that registration of “Wild Ox” is likely to cause confusion with Red Bull’s trademarks. As a result, the registration of “Wild Ox” is cancelled accordingly.       

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SEVVemhWaEJGeFNadWx2aklxK0NhQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true